Identify Prior Art to Support Patent Prosecution

When someone comes up with a patentable invention, they can forget about the patents already held by other people. If you acquire a patent on your invention, this patent does not give you freedom to operate.

Freedom to operate refers to the ability to sell one’s product or service without infringing the patent rights of another party.

When you are granted a patent, you are preventing others from commercializing your patented technology. However, even though everyone else is prevented from this course of action, you must still perform due diligence freedom to operate analyses before you attempt to commercialize the technology.

Freedom to operate is questionable if your invention uses any other invention. An invention can be a process, the machine, manufacture or composition of matter, so a lot is covered.

As a simple example, a person who invented an eraser tip to go on the end of a pencil could patent that invention. However, unless they also owned the patent for a pencil, they would not have the ability to manufacture and sell eraser-tipped pencils without infringing copyright. In this case, the person who owns the patent on a pencil is having their copyright infringed.

Freedom To Operate Search:

Freedom to operate or FTO can never be ascertained with absolute certainty. An FTO analysis is a due diligence process which aims to identify any in-force or pending patents that may compromise your freedom to operate.

The results of this process of searching are used to obtain a legal opinion upon whether your proposed product, process or service will infringe any other patents.

If a patent which blocks FTO is found there are a few reasons why this might not be a problem.

Patents last for twenty years after the filing date if they are granted. Many patents are allowed to lapse before this time. If a patent is no longer worth having or the owner hits financial difficulties, the maintenance fees may go unpaid and in this case, the patent lapses before the twenty-year period is up.

It may be that the patented technology that blocks your FTO is territorial. Patented technology may be in the public domain in some countries.

Every patent contains a description of the invention but also a legal set of claims that define the protection of the invention. There is usually a process of negotiation between the patent office and the inventor when a patent application is filed. The inventor will make broad claims on their application to secure a lot of legal protection. The patent office will ask the inventor to narrow these claims without affecting the actual description of the invention.

Patent claims are always very technical and need to be read and interpreted by someone who can understand what is being claimed and what is not.

Patents that Limit Your Freedom To Operate:

If a patent is found during the search thatlimits your freedom to operate, there are a few different options open to you.

First, you can contact the patent holder and offer to buy their patent. You can also ask to license the patent, which means the original holder still owns it, but they are allowing you to use the patent for a specific purpose in a specific market for a specific length of time. The validity of this option as a solution will depend upon how willing the patent holder is to give you the rights you require.

Sometimes a cross-licensing agreement can be reached. When two or more companies want to use each other’s patents they can come to an agreement where they each allow the other the use of their patents. To be eligible for this, a company needs a very well protected patent portfolio that has a lot of potential value to the other interested parties. There is no point having the use of a patent if it can’t be protected adequately.

Somewhat similar to crosslicensing is the option to create a patent-pool. Two or more companies in a related field pool their patents and establish a clearinghouse for patent rights. Sony, Philips, and Pioneer have formed a patent pool.

If none of these options seem viable, your company can “invent around”. This process involves finding out exactly what they risk infringing and to adjust their invention to avoid making an infringement. This is usually a good option if the patent in question has very narrow claims. The more specific (narrow) their claims are, the more you are likely to be able to use the idea but create a sufficiently different invention to get your patent.

Why Can Freedom To Operate Be Complex?

Establishing freedom to operate is not always a straightforward process. First, there are an enormous amount of patents in existence; thousands are granted every week. Furthermore, there might be a patent application pending at the patent office that would obstruct your FTO. Patents don’t get published until roughly eighteen months after filing and therefore, there may be no way for you to know about a problematic patent or view it.

If you are aware of a pending patent, you still don’t know how the claims will eventually be defined. Inventors will be negotiating with the patent office during the application process, and one or more of their claims may have to be changed. In this case, there is no way to know exactly how the patent issues will affect your FTO.

Freedom to operate search minimizes the risks inherent in commercializing your patented invention. The results of the search will assist in developing the strategy for commercializing your invention. This might involve a new, modified invention that you try to patent or a strategy of asking for permission from the relevant rights holders.

Conduct An FTO Search To:

- Clear your products, technologies ad processes
- Conduct risk assessments for patent infringement
- Understand your licensing needs
Steer your product development programs in the right direction